Background of the case

The patent at issue (EP 1 998 604) was filed 29 March 2007 in the name of Maschio Gaspardo. Maschio Gaspardo is an Italian multinational company active in the development, production and marketing of agricultural equipment (including agricultural equipment for soil cultivation).

EP 1 998 604 relates to a reversable tool for agricultural subsoilers and is validated in France, Turkey, Italy, Germany, Romania, Czech Republic and Bulgaria.

Maschio Gaspardo (the claimant) stated that the Greek company Spiridonakis Brothers (the defendant) offered for sale, distributed and advertised a product under the name “Bellota tool”, which, Maschio Gaspardo stated, was a counterfeit of the product covered by EP 1 998 604.

Accordingly, Maschio Gaspardo sought relief against this alleged infringement.

Infringement: the law

Under Article 25 UPCA, direct patent infringement occurs when a third party (not having the proprietor’s consent) performs an act of making, offering, placing on the market or using a product which is the subject-matter of the patent. However, even if direct patent infringement cannot be shown, indirect patent infringement under Article 26 UPCA may still occur.

Article 26 UPCA provides the right to “prevent any third party not having the proprietor’s consent from supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.”

The key legal question was whether indirect infringement under Article 26 UPCA could be established when the offer of supply occurred in several contracting member states but the putting into effect of the invention occurred in only one of these states.  

Interpretation of double territoriality 

In a decision by default, the Milan Central Division found that direct infringement had taken place in view of the sale, distribution and advertisement of the Bellota tool by the defendant. However, despite this finding of direct infringement, the court devoted considerable analysis to the question of potential indirect infringement (in case a slightly different interpretation of the claim wording was taken).

The Bellota tool (which was considered at least an essential element of the invention) could be ordered online from contracting member states Germany, Italy, France and Bulgaria, for shipment to Bulgaria. Therefore, the Bellota tool was supplied within the territory of a contracting member state in which that patent has effect, namely in Bulgaria, for putting into effect there. In other words, since the Bellota tool was offered in Bulgaria for putting into effect in Bulgaria once delivered, the double territoriality requirements were met (with respect to Bulgaria).

However, the court yet further confirmed that the double territoriality requirements would also be satisfied also with respect to the other contracting member states of Germany, Italy and France, even though the Bellota tool was not available for shipment to those contracting states.

In particular, the court confirmed that the double territoriality requirements of Article 26 UPCA are met where the offer and the putting into effect are established with regard to the territory of the contracting member states where the European patent is valid. It is not necessary that both acts (the offer and the putting into effect) occur in the same contracting member state.

Accordingly, the offer to supply in, say, Germany (where the Bellota tool could be ordered online) for putting into effect in Bulgaria (where the Bellota tool could be shipped to) also amounted to indirect infringement of the patent at issue.

Therefore, in addition to direct infringement, the court found that indirect infringement had taken place. Even if a slightly different construction of certain elements of the claim meant that direct infringement was not accepted, the defendant’s conduct would still qualify as indirect infringement of EP 1 998 604, both in Bulgaria and in the other contracting member states of Germany, Italy and France.

Conclusion

This decision provides an important clarification on the interpretation of the double territoriality requirement for indirect infringement under Article 26 UPCA. By rejecting a narrow interpretation of this requirement, the court has broadened enforcement options against cross-border online sales and supply chains. 

Case details at a glance

Jurisdiction: UPC
Decision level: Milan Central Division
Parties: Maschio Gaspardo SpA (claimant) and Spiridonakis Bros GP(defendant)
Registry citation: ORD_17811/2025
Order/decision: ORD_17812/2025
Date: 25 June 2025
Decision: dycip.com/upc-ord-17811-2025